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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Patent Reissue Cannot Cure Mistaken Terminal Disclaimer

Posted On: Dec. 10, 2012   By: Scott A. McKeown
patent reissueTerminal Disclaimer Permanent Once Patent Issues

Back in January of 2011 I discussed the appeal decision in Ex parte Shunpei Yamazaki relative to patent reissue practice. In Yamazaki, a reissue patent application was filed shortly after issuance of U.S. Patent 6,180,991 for the purpose of withdrawing an earlier filed terminal disclaimer.

By way of background, the ‘991 patent issued on January 30, 2001 (based upon an application filed April 21, 1995). During the original prosecution, a terminal disclaimer was filed (November of 1996) to overcome a double patenting rejection. Thereafter, the claims subject to the earlier double patenting rejections were amended. Since the amended claims were believed to be distinct from those of the earlier patent, the Applicant petitioned to withdraw the earlier filed terminal disclaimer (April 1999). The petition remained pending for some 20+ months at the USPTO, but, the patent issued prior to any USPTO action on the petition filing. The petition was ultimately dismissed as moot once the ‘991 Patent issued.

Adding insult to injury, the USPTO explained in their belated petition decision that a terminal disclaimer could not be removed once a patent issues as patent reissue did not contemplate such mistakes as “error” under the reissue statute. In other words, even though the patent holder had disclaimed some 14 years of patent term by mistake, there was no mechanism to cure that mistake post issuance. Nevertheless, the Patentee filed a patent reissue application in an attempt to withdraw the terminal disclaimer.

In deciding the propriety of a patent reissue proceeding to remove a terminal disclaimer, an expanded panel of the BPAI (now PTAB) held that patent reissue could not reset the term of the original patent (which was set by the disclaimer). Interestingly, the BPAI decision also included concurring opinions that would have held differently had the patent not expired prior to completion of the reissue proceeding (December 2003).

Last week, the CAFC affirmed the USPTO, and made clear that patent reissue cannot withdraw a terminal disclaimer, even if the reissue proceeding were capable of concluding prior to expiration.

In their decision the CAFC explained (here):

[W]e recognize that the reissue statute “is remedial in nature, based on fundamental principles of equity and fairness, and should be construed liberally.”In re Weiler, 790 F.2d 1576, 1579 (Fed. Cir. 1986). Yet “the remedial function of the statute is not without limits.” In re Serenkin, 479 F.3d 1359, 1362 (Fed. Cir. 2007). In this case, the various delays Yamazaki experienced in prosecuting his reissue application, while puzzling and undeniably unfortunate, had no effect on the eventual outcome because, as discussed, § 251 precluded the PTO from allowing the Reissue Application at any point during its pendency. Cf. In re Orita, 550 F.2d 1277, 1280–81 (CCPA 1977) (rejecting a reissue application as seeking a correction that would have offended statutory requirements).

In footnote 3 of the opinion, the CAFC emphasizes the significant delays in both the patent reissue proceeding and original prosecution of this case. Unfortunately, patent reissue, while an important post grant tool for patentees, is still plagued to this day by unacceptable delays and maddening inefficiency.

One Response to “Patent Reissue Cannot Cure Mistaken Terminal Disclaimer”

  1. Paul F. Morgan says:

    This is the same “Catch 22″ the PTO uses regularly, especially for petitions against improper restriction requirements. That is, refuse to decide a petition on a vital but non-appealable issue until after the applicant is forced to proceed anyway in order to avoid a statutory abandonment. That [and PTO gross delays of reissue applications in violation of the PTO's own requirements for high priority] is conduct that would undoubtedly be subject to an Administrative Proceedural Act mandamus action, but that would be unlikely to be decided in time either.